smar(tm)ark® trademark newsletter from Erik Pelton

September 2020

Each time I go to a legal or a business conference, one of the biggest topics people are buzzing about is artificial intelligence, and how it might transform the way that a particular career or job or role or industry operates. There is no doubt that artificial intelligence will impact and change a lot of the tools that can do trademark research and writing. But it is all the other things that go into a trademark application that I don't think can ever be replaced by artificial intelligence or computers.

Each time I file a new trademark application, many things go into it. What do I mean by those intangible things? I mean the fact that I was trained as a USPTO Examiner by officials at the USPTO; and that I've attended dozens and dozens of meetings at the USPTO to learn the latest developments and insights from them; that I've attended many, many conferences and lectures every year, in person, on the web and learned from skilled practitioners in the field of trademarks; and that I participate in trademark organizations and committees and insights that they provide, learning about new developments.

A computer might be able to find another case that's also about a restaurant or that's also about the similarity of two marks that begin with the same word, but much, much more goes into finding the appropriate case law that might be relevant in a particular dispute or topic. I've also worked teaching law students and mentees who asked me challenging questions all the time, and I learn as much from them as I teach them. All of these intangibles go into all of the trademark work.

Each of the thousands of trademark applications that I've filed at the US Patent and Trademark Office, also are all in part informing the next application. All of the little things that I've learned along the way in each of those applications about things that worked or things that didn't, or things that sped up the process, and all of the lessons that they provided, all of that experience is much more than mere data that a computer can process and learn from.

What I have concluded is that a trademark application is just as much of an art as it is a science; computers can help with the science part of it, but they'll never replace the art portion of it.

The Spectrum of Trademarks, from Strong to Weak

There are 5 basic types of marks. In descending order, from those with

the most protection to the least, they are:

Coined: Completely new and made-up terms, such as Exxon® for
oil and gas and Kodak® for film and cameras.
Arbitrary: Real words, but words that are unrelated to the goods
or services, such as Yahoo!® for internet services and Apple® for
computers.
Suggestive: Words that relate to the goods or services but that
are not descriptive of them, such as Cafe Gelattohhh® for
restaurant services featuring gelato, Ebeanstalk® for online store
services featuring developmental toys, and Tuffrax® for ceilingsuspended
shelves.
Descriptive: Terms that can be used to refer to a product or
service or to its functions or characteristics, such as Sports
Illustrated® for a sports magazine and U.S. Pro Golf Tour® for golf
tournaments.
Generic: Words that are commonly used to refer to a good or a
service, or that answer the question, "What is it?", such as
"laptop" for a portable computer.

Coined, arbitrary, and suggestive names are generally able to become
registered trademarks, provided someone has not already registered a
confusingly similar mark for a related product or service. Coined and
arbitrary marks are given the "strongest" protection and are thus
considered by some to be the most desirable. Descriptive marks may
sometimes be registered but generally are afforded less protection. For
this reason, descriptive marks are considered "weak." Generic trademarks
are the weakest of all-they are entitled no protection.

In my opinion, suggestive names or coined terms that are suggestive are generally the best because they are entitled to good protection, are creative, and tell the consumer something about a good or service.

Some examples of great suggestive names:

Web
* Pinterest
* Groupon
* eBay
* Travelocity
* YouTube
* OpenTable

Restaurants
* Lox Stock & Bagel
* Lettuce Eat
* Thai the Knot
* Tossed (salad restaurant)

Coffee
* Brewed Awakening
* Bean Around the World

What is a 'disclaimer' in a trademark filing?

What is a Disclaimer in a trademark filing?

Despite pandemic, filings have increased in 2020

"Despite the health, social, business, and economic of the COVID-19 pandemic for the last six months, the number of trademark application filings has actually increased at the USPTO compared with 2019. The USPTO Director noted in a recent speech that "Through the end of August 2020, trademark filings are 3.2% above filings for the same period last year and are slightly higher than we expected. In fact, August 2020 is our biggest filing month yet." See Remarks by Director Iancu at the Intellectual Property Owners Association's 2020 Virtual Annual Meeting.

Brand are not going anywhere despite all the challenges. Existing businesses are investing in the future, and new businesses are cropping up in record numbers as well.

Last month, I accepted a additional opportunity to teach some of the next generation of attorneys as I've joined the adjunct faculty at Howard University School of Law this fall part-time to teach their trademark clinic course. The clinic students work with under-served clients pro bono, so it is a real win-win. Plus I get to continue learning and growing in the process of teaching!

If there are any topics or issues you would like to see covered here, let us know!

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This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.